Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Privacy Administrator, Anonymize, Inc., United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2020. On August 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2020. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on September 23, 2020. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on October 9, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background Complainant is an online social-networking service based in the United States reporting 1.79 billion active daily users worldwide. Complainant is the proprietor of numerous registrations for its FACEBOOK mark, including the following: - United States trademark Registration No. 3122052 for FACEBOOK (word mark), registered on July 25, 2006; Complainant operates its primary business website at “www.facebook.com.” Moreover, Complainant has registered a number of additional domain names containing its FACEBOOK Mark. The disputed domain name Under the first element, Complainant states that it has established rights in the FACEBOOK Mark through trademark registrations in various jurisdictions. The disputed domain name incorporates Complainant’s FACEBOOK Mark in its entirety, together with the descriptive term “mail,” under the country-code Top-Level Domain (“ccTLD”) “.co”. Under the second element, Complainant states that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Respondent is not a licensee of Complainant and is not affiliated with Complainant. The disputed domain name is used to redirect Internet users to third-party websites, some of which are commercial in nature. One of these websites displays a link that reads “Buy this domain”, which redirects to “www.dan.com” wherein the disputed domain name is offered for sale for USD 199. The disputed domain name is also being used in connection with a phishing scheme whereby Respondent is impersonating Complainant to mislead recipients into clicking on a link, which may be used to induce Facebook users to disclose their personal information. Respondent is not commonly known by the disputed domain name and is not making legitimate noncommercial or fair use of the disputed domain name. Under the third element, Complainant states that its FACEBOOK Mark is highly distinctive and famous throughout the world. The Mark has been used continuously by Complainant in connection with its social network since 2004 and has acquired considerable goodwill. Respondent cannot credibly argue that it did not have knowledge of Complainant and its FACEBOOK Mark at the time that Respondent registered the disputed domain name. The disputed domain name is used in emails in which Respondent sought to impersonate Complainant. Furthermore, offering the disputed domain name for sale for USD 199 is a sum that exceeds Respondent’s documented out-of-pocket costs directly related to the disputed domain name. The disputed domain name is being used by Respondent as part of a fraudulent email scheme whereby Respondent impersonates Complainant to solicit users’ personal data. Respondent, by using the disputed domain name for dynamic redirection to third-party websites, has attempted to attract, for commercial gain, Internet users to the websites to which the disputed domain name redirects. Under these circumstances, Respondent’s use of a privacy service to hide his identity is further evidence of bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights in the FACEBOOK Mark through registrations in several jurisdictions, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. In comparing Complainant’s FACEBOOK Mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with the FACEBOOK Mark. The disputed domain name contains the FACEBOOK Mark in its entirety. The addition of the dictionary term “mail” does not prevent a finding of confusing similarity with the FACEBOOK Mark, which is clearly recognizable within the disputed domain name. Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” It is the well-established view of UDRP panels that the addition of the ccTLD “.co” to the disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which contains Complainant’s mark together with the dictionary term “mail,” cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1. The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the FACEBOOK Mark with the permission of Complainant. The evidence in the record indicates the disputed domain name is used for a fraudulent scheme, which can never confer rights or legitimate interests on Respondent. See WIPO Overview 3.0, section 2.13.1. The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the disputed domain name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel finds bad faith registration under the Policy, paragraph 4(b)(iv). Complainant’s rights in the FACEBOOK Mark predate by over a decade the registration of the disputed domain name. The Panel agrees with previous panels that, due to the worldwide reputation of Complainant’s FACEBOOK mark, it is implausible that Respondent was unaware of Complainant’s mark when it registered the disputed domain name (see, for example, Facebook Inc. v. Sleek Names, SL Names, VSAUDHA,WIPO Case No. D2015-0547). The disputed domain name contains Complainant’s FACEBOOK Mark in its entirety, with the addition of the dictionary term “mail”, which strengthens the association with Complainant when the nature of the fraudulent email scheme is considered. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith. The Panel finds that Respondent has demonstrated bad faith use in using the disputed domain name for a fraudulent email scheme wherein Respondent impersonated Complainant in the subject line and content of emails sent to induce recipients to click on a link and enter personal information. Respondent also demonstrated bad faith in using the disputed domain name for commercial gain by enabling dynamic redirection to third-party sites, some of a commercial nature, including a site that featured a link through which the disputed domain name was offered for sale for an amount exceeding out-of-pocket costs of registration. Respondent has failed to file any response or provide any evidence of actual or contemplated good faith registration and use of the disputed domain name. The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Ingrīda Kariņa-Bērziņa
- European Union Trade Mark Registration No. 009151192 for FACEBOOK (word mark), registered on December 17, 2010;
- International trademark No. 1075094 for FACEBOOK (device mark), registered on July 16, 2010 (collectively, the “FACEBOOK Mark”).
Sole Panelist
Date: October 21, 2020
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